Ex Parte Dotson et al

Patent Trial and Appeal Board

Sep 28, 2016

13237166 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/237, 166 09/20/2011
25280 7590
Legal Department (M-495)
P.O. Box 1926
Spartanburg, SC 29304
09/28/2016
FIRST NAMED INVENTOR
Michael Edward DOTSON
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
6606 1529
EXAMINER
THROWER,LARRYW
ART UNIT PAPER NUMBER
1742
MAILDATE DELIVERY MODE
09/28/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL EDWARD DOTSON,
JAMES ENDICOTT, PATRICK A. PETRI,
and KIRKLAND W. VOGT
Appeal2015-005738
Application 13/237,166
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1-18 under 35 U.S.C. § 102(b) as anticipated by
Manesh et al. 1' 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 US 2008/0314486 Al, published December 25, 2008 ("Manesh").
2 Claims 19-30 are also pending but have been withdrawn from consideration.
Appeal2015-005738
Application 13/237,166
The Appellants disclose an annular structure having inner and outer
reinforcement bands in concentric relationship, separated by a cast-in-place, core
layer. Spec. 1, 11. 2--4. The claims on appeal are directed to a method of making
the annular structure.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated September 18, 2014 ("Br."). The limitation at issue is
italicized.
T"li __ ~ nr. .J.
1. A method of making an annular reinforced structure,
comprising the steps of:
(a) providing inner and outer reinforcement bands in a mold,
whereby the inner and outer reinforcement bands are maintained in
concentric spaced relationship;
(b) casting a core material in the mold, in the space between
the inner and outer reinforcement bands, wherein the core material has
a density of 0.75 g/cm3 or greater; and
( c) removing the annular reinforced structure from the mold.
B. DISCUSSION
The Examiner finds Manesh describes the method recited in claim 1. More
specifically, the Examiner finds Manesh discloses the steps of (1) providing inner
and outer reinforcement bands (i.e., 20 and 30, respectively) in a mold, whereby
the inner and outer reinforcement bands are maintained in concentric spaced
relationship (Manesh Fig. 3), and (2) casting core material 40 in the mold in the
space between the inner and outer reinforcement bands (Manesh i-fi-1 52, 102).
Ans. 2. 3
3 Examiner's Answer dated February 24, 2015.
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Appeal2015-005738
Application 13/237,166
The Appellants recognize that interconnected web 40 of Manesh connects
inner ring 20 to outer ring 30. Br. 4 (citing Manesh i-f 52). Nonetheless, referring
to a different embodiment in Manesh, the Appellants argue that "[a] pre-formed
foam material may be inserted into interconnected web 40 [comprising polygonal
openings 50] to prevent debris from entering into the web." Br. 4 (citing Manesh
i-f 104); see also Manesh i-f 104 ("[i]n yet additional embodiments"). For that
reason, the Appellants argue "Manesh does not teach a method that includes
casting a core material in the mold, as recited by Appellants' claims." Br. 4.
The Appellants' argument is not persuasive of reversible error. On this
record, it is clear that Manesh casts core material 40 in the mold as recited in claim
1. See Manesh i-fi-152, 102. To the extent the Appellants are arguing that the
claimed core material is required to fill the entire space between the inner and
outer reinforcement bands, the Examiner correctly concludes that the Appellants'
argument is not supported by the language of claim 1. See Ans. 4 ("The core is not
required to fill in all of the space between the inner and outer bands.").
Moreover, having determined that the claims do not require the cast core
material to fill the entire space between the reinforcement bands, the Examiner
correctly concludes that "the term 'comprising' in the preamble leaves the claims
open to additional unclaimed steps, such as inserting additional pre-formed
material," as described in an alternative embodiment in paragraph 104 ofManesh.
Ans. 4.
For the reasons set forth above and reasons provided in the Examiner's
Answer, the§ 102(b) rejection of claims 1-18 is sustained.
C. DECISION
The Examiner's decision is affirmed.
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Appeal2015-005738
Application 13/237,166
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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